PTAB

IPR2024-00634

Fluidmaster Inc v. Danco Inc

Key Events

Petition

petition Intelligence

Title: Toilet Fill Valve
Brief Description: The ’105 patent relates to a toilet fill valve system where a bowl fill restriction attaches directly to an integrally molded, extended portion of the valve body. This direct connection purportedly eliminates a connecting hose to prevent the formation of a pressure head.

Prior Art Relied Upon: Guoxin (Registered Utility Model Publication Number CN2447417Y) and Ho (Patent 5,862,538).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Guoxin, which was not considered during prosecution, discloses nearly all elements of the independent claims, including a toilet fill valve with an extended portion and a directly attached bowl fill restriction. However, Guoxin discloses the reverse coupling arrangement from that claimed (i.e., the valve has a protrusion and the restriction has a recess). Ho was asserted to disclose the claimed arrangement: a bowl fill restriction with a protrusion that inserts and locks into a recess on the valve’s extended portion.
- Motivation to Combine: A POSITA would combine Ho's locking mechanism with Guoxin's system because swapping the male and female components of a fluid connector is a well-known and simple design choice. Petitioner contended that reversing the mating surfaces is a matter of design preference that would have been obvious to obtain a predictable result.
- Expectation of Success: A POSITA would have a high expectation of success, as the combination involves substituting one known coupling arrangement for another to perform the same locking function in a known and expected manner.

Prior Art Relied Upon: Brown (Patent 3,086,546) and Ho (Patent 5,862,538).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Brown, which was listed on the face of the ’105 patent but not used in a rejection, teaches a toilet fill valve with a bowl fill restriction (a set screw) that attaches to an extended portion of the valve body. To the extent Brown does not explicitly teach an integrally molded extended portion with a recess for receiving a protrusion, Petitioner argued Ho clearly discloses this feature.
- Motivation to Combine: A POSITA would be motivated to modify Brown’s older (1959-era) design by incorporating the modern, integrally molded features taught by Ho. This combination would be a routine optimization to improve the strength, integrity, and ease of manufacturing of Brown's valve system using contemporary polymer molding technology.
- Expectation of Success: Modifying the Brown device with Ho's integrally molded connection would be a predictable improvement, as it applies a known manufacturing technique to achieve the common goals of cost reduction and simplified assembly.

Prior Art Relied Upon: Schuster (Patent 8,104,105).
Core Argument for this Ground:
- Prior Art Mapping: This ground is premised on Petitioner’s argument that the ’105 patent is not entitled to a priority date earlier than January 27, 2014. Petitioner asserted that prior applications in the patent’s family only disclosed an adjustable "bowl fill valve" and lacked written description support for the broader term "bowl fill restriction," which was first introduced on that date and covers both adjustable and fixed-flow devices.
- Key Aspects: Because Schuster was published in 2012, it qualifies as prior art if the later priority date is established. Petitioner argued that Schuster’s specification is nearly identical to that of the ’105 patent and anticipates every limitation of the challenged claims, including a toilet fill valve with an integrally molded extended portion and a directly attached bowl fill restriction having a protrusion that snap-fits into a recess.
Additional Grounds: Petitioner asserted additional obviousness challenges over Guoxin/Ho and Brown/Ho, further in view of the "Quick Connection Art" (including Bjerke, Calmettes, Hall, and Kimber). These grounds argued that incorporating well-known connection mechanisms like clamping or snapping, as taught by the Quick Connection Art, to meet certain dependent claim limitations would have been obvious.

"bowl fill restriction": Petitioner argued this term should be construed to mean "an adjustable or fixed device capable of restricting or constricting the flow of water." This construction, adopted from the Patent Owner's infringement contentions, is critical to Petitioner's argument that earlier applications disclosing only adjustable "valves" do not provide written description support for the broader claims reciting a "restriction."
"integrally molded": Citing the patent's definition of "integral," Petitioner proposed construing this term to mean "molded together as a single structure or molded separately and subsequently attached to one another to form a single structure."

Petitioner argued against discretionary denial under §314(a) based on a parallel district court case, stipulating that if inter partes review (IPR) is instituted, it will not pursue in court any ground raised or that could have been reasonably raised in the IPR. Petitioner also noted the litigation is in an early stage, with trial scheduled for June 2025.
Petitioner further argued that denial under §325(d) is unwarranted because the primary prior art references relied upon in the petition (Guoxin, Ho, Brown, and Schuster) were not the basis of any rejection by the examiner during prosecution and are materially different from the art previously considered.

Petitioner requests institution of IPR and cancellation of claims 1-24 of Patent 9,103,105 as unpatentable.