PTAB

IPR2024-00051

Topp & SCReed SA v. Somero Enterprises Inc

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1. Case Identification

2. Patent Overview

  • Title: Wheeled Concrete Screeding Device
  • Brief Description: The ’366 patent discloses a wheeled concrete screeding device for striking off and finishing uncured concrete surfaces. The device includes a wheeled frame supporting a screed head, which comprises a grade-establishing element (e.g., a plow) and a vibratable member that is vertically adjustable in response to a laser-guidance system.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-9 by Quenzi under 35 U.S.C. §102

  • Prior Art Relied Upon: Quenzi (Application # 2003/0068200).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Quenzi, which describes a lightweight apparatus for screeding concrete, discloses every limitation of claims 1-9. Quenzi teaches a wheeled unit movable through uncured concrete with a screed head supported at its rear. The screed head includes both a grade-setting member (plow) and a vibrating member, which is vertically adjustable using a laser-guidance system. Critically, Petitioner asserted that Quenzi explicitly discloses the key limitation of claim 1, teaching a vibrating member that "generally floats upon" or is "at least partially supported" on the struck-off concrete surface. Petitioner contended this was the same feature the Patent Owner relied upon to overcome prior art during the original prosecution.
    • Key Aspects: Petitioner highlighted that the ’366 patent itself incorporates by reference Quenzi’s disclosure as written description support for how the screed head "generally floats on or is supported by the concrete surface," which Petitioner argued is a direct admission of Quenzi's anticipatory teaching.

Ground 2: Obviousness of Claims 1-15 over Jochems in view of Quenzi under 35 U.S.C. §103

  • Prior Art Relied Upon: Jochems (European Patent Application EP0743408B1) and Quenzi (Application # 2003/0068200).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Jochems discloses a wheeled, multi-frame screeding machine with an articulated body, teaching the limitations of claims 10-15 related to an "articulatable wheeled unit." Jochems’ machine consists of two frame parts connected by a vertical hinge axis, allowing it to be highly maneuverable in tight spaces. Quenzi was argued to supply the remaining limitations of claims 1-9 and 13, particularly its disclosure of a screed head with a "floating-type" vibrating beam that is at least partially supported by the uncured concrete. The combination of Jochems’ articulated frame with Quenzi’s floating screed head would result in the device claimed in the ’366 patent.
    • Motivation to Combine: A POSITA would combine Jochems and Quenzi to solve the known problem of screeding concrete in areas inaccessible to large boom screeds. Jochems expressly teaches a machine designed for maneuverability around obstacles like pillars and in areas with low ceilings. Quenzi explains the benefits of a floating vibrator beam, which "continues to consolidate, smooth, level and finish the uncured concrete surface." A POSITA would have been motivated to incorporate Quenzi's superior screed head into Jochems' highly maneuverable frame to create a single device that was both agile and produced a higher quality finish, addressing market demands for efficiency and quality.
    • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success. Articulating screeding machines like Jochems were well known, and Quenzi’s screed head utilized a well-known four-bar linkage system to connect to its wheeled support. A POSITA could have readily adapted this known linkage system to mount Quenzi’s screed head onto Jochems’ machine with, at most, obvious design modifications.

  • Additional Grounds: Petitioner asserted an alternative ground that claims 1-9 are obvious over Quenzi alone. This argument contends that to the extent any feature is not explicitly shown in a single embodiment within Quenzi, the reference itself suggests combining features from its various disclosed embodiments, making such combinations obvious to a POSITA.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §325(d) and Fintiv.
  • §325(d) / Advanced Bionics: Petitioner asserted that while Quenzi and Jochems were cited on an IDS during prosecution, they were never substantively applied by the Examiner. Instead, the Examiner relied on a weaker reference (Nomura), which the applicant distinguished by arguing Nomura’s vibratable member did not "at least partially float" on the concrete. Petitioner argued this was a material error by the Office, as Quenzi explicitly discloses this exact feature, and the Examiner failed to appreciate the significance of this stronger, available art.
  • Fintiv Factors: Petitioner contended that the parallel district court litigation is in its early stages with no discovery taken, and the median time to trial is approximately 36.4 months, well after a Final Written Decision (FWD) would issue. Therefore, the Fintiv factors favor institution, especially given the compelling nature of the unpatentability grounds.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-15 of the ’366 patent as unpatentable under 35 U.S.C. §§102 and 103.