PTAB

IPR2024-00192

Hilti Aktiengesellschaft v. Specified Technologies Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Adjustable Head-of-Wall Insulating Construction
  • Brief Description: The ’232 patent discloses an insulating gasket for sealing head-of-wall joints in building construction. The gasket is typically formed from two L-shaped sections that create a downwardly facing C-shaped configuration to mate with a ceiling track, providing firestopping and acoustic insulation.

3. Grounds for Unpatentability

Ground 1A: Claims 6-12 are obvious over Pilz I in view of Morgan and Pilz II (Fig. 10A Embodiment)

  • Prior Art Relied Upon: Pilz I (Application # US2009/0049781), Morgan (Patent 6,783,345), and Pilz II (Patent 8,595,999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Pilz I discloses all limitations of independent claim 6 except for the precise location of the adhesive means. Specifically, Pilz I’s Fig. 10A embodiment shows two L-shaped gasket sections positioned on a ceiling track and connected by a "fire strap 116" that functions as the claimed connecting strap. Morgan was cited to supply the missing element, as it explicitly taught placing an adhesive on the bottom side of the upper panel of an L-shaped gasket section for attachment to a ceiling track. Dependent claims were allegedly met by further disclosures in Pilz I, such as the use of intumescent material (claims 9-10), forming an air and sound seal for acoustic insulation (claim 11), and being formed from a single piece of material (claim 12).
    • Motivation to Combine: A POSITA would combine Pilz I with Morgan as an obvious design choice to determine the adhesive location, which was one of a few predictable options. Petitioner asserted this placement would also allow the vertical gasket panels to move freely relative to the track, preventing stress and tearing from normal building movement, a known problem in the art. Pilz II was added to teach that varying gasket dimensions to fit "wider than standard" walls was a known practice to achieve flexibility for different job site conditions.
    • Expectation of Success: A POSITA would have a reasonable expectation of success as the combination involved applying a known adhesive technique (Morgan) to a similar firestopping gasket (Pilz I) to achieve a predictable improvement in durability and installation, all within the same mechanical field.

Ground 1B: Claims 6-12 are obvious over Pilz I in view of Morgan and Pilz II (Fig. 8 Embodiment)

  • Prior Art Relied Upon: Pilz I (Application # US2009/0049781), Morgan (Patent 6,783,345), and Pilz II (Patent 8,595,999).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground relied on an alternative embodiment in Pilz I, described with reference to Fig. 8, which disclosed a single, C-shaped piece of intumescent material that fits over a ceiling track. Petitioner argued this C-shaped gasket inherently comprised two L-shaped sections and an integral "connecting strap" (the top horizontal portion). As in Ground 1A, Petitioner contended that while Pilz I disclosed using adhesive backing generally, Morgan supplied the specific teaching of placing the adhesive on the upper horizontal panel. The arguments for dependent claims remained consistent with those in Ground 1A.
    • Motivation to Combine: The motivations were identical to those in Ground 1A. A POSITA would be motivated to apply Morgan's specific adhesive placement to the C-shaped gasket of Pilz I to gain the benefit of allowing the side panels to move freely. A POSITA would also look to Pilz II to confirm the benefit and practice of adapting such gaskets for wider-than-standard walls.
    • Expectation of Success: The expectation of success was the same as in Ground 1A, as it involved the combination of well-known components in a predictable manner to solve a known industry problem.

4. Arguments Regarding Discretionary Denial

  • §325(d) - Examiner Error: Petitioner argued against discretionary denial under §325(d), asserting the Examiner made material errors during prosecution. The Examiner allegedly overlooked key disclosures in Pilz I that were not present in its parent ('198 patent), which the Examiner primarily relied upon for the rejection. These overlooked disclosures included the "fire strap 116" (basis for Ground 1A) and the C-shaped gasket embodiment that forms an integral connecting strap (basis for Ground 1B). Petitioner contended that had the Examiner considered these disclosures, which directly teach the "connecting strap" limitation that was the sole basis for allowance, the challenged claims would not have issued.
  • Fintiv Factors: Petitioner argued that denial under the Fintiv factors was unwarranted, primarily because it filed a Sotera stipulation. This stipulation commits Petitioner to not pursue in the parallel district court litigation any invalidity grounds that were raised or reasonably could have been raised in the IPR. Petitioner noted that under the USPTO Director's current guidance, such a stipulation weighs dispositively against exercising discretion to deny institution.

5. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 6-12 of the ’232 patent as unpatentable.