Klein Tools Inc v. Milwaukee Electric Tool Corp

1. Case Identification

• Case #: IPR2024-01401
• Patent #: 11,794,952
• Filed: September 17, 2024
• Petitioner(s): Klein Tools, Inc.
• Patent Owner(s): Milwaukee Electric Tool Corporation, Keter Home and Garden Products Ltd.
• Challenged Claims: 1-23

2. Patent Overview

• Title: Container Assembly
• Brief Description: The ’952 patent describes a container assembly with a coupling mechanism for detachably connecting two containers. The mechanism involves a first coupler on a top face of a first container engaging with a second coupler on a bottom face of a second container.

3. Grounds for Unpatentability

Ground 1: Claims 1-23 are obvious over Burchia in view of Metabowerke.

• Prior Art Relied Upon: Burchia (Patent 10,750,833) and Metabowerke (German Patent No. 20 2014 103 695 U1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Burchia, a patent for stackable containers, disclosed nearly all limitations of the challenged claims. This included two containers connected via a protrusion with a tongue sliding into a surface with a back wall, side walls, and a rib, secured by a spring-biased locking latch. To the extent the Patent Owner might argue Burchia’s coupler does not project from a "depressed surface" as claimed, Petitioner asserted Metabowerke taught this feature. Metabowerke disclosed stackable containers with a coupling mechanism featuring a smaller, self-contained depressed surface on the lid.
  • Motivation to Combine: A POSITA would combine the references because both relate to releasably stackable containers like toolboxes. A POSITA would incorporate Metabowerke's smaller, recessed coupler into Burchia's design to reduce the risk of damage to a protruding coupler, create more internal container space, and make the connector flush with the lid surface.
  • Expectation of Success: A POSITA would have an expectation of success because both systems used the same type of coupling mechanism (a tongue engaging a rib), making the substitution of Metabowerke's coupler into Burchia's container a straightforward modification.

Ground 2: Claims 1-23 are obvious over Burchia and Metabowerke in view of Lafragette.

• Prior Art Relied Upon: Burchia (Patent 10,750,833), Metabowerke (German Patent No. 20 2014 103 695 U1), and Lafragette (Application # 2003/0139080).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1, adding Lafragette to address a potential argument that Burchia lacked a specific "locking latch arresting location" defined as a recess. Lafragette disclosed a connection module that mated with an electrical box using a similar tongue-and-rib mechanism and explicitly taught a resilient tab (a spring-biased latch) that engaged a recess, which served as the arresting location.
  • Motivation to Combine: A POSITA would be motivated to add Lafragette's recessed arresting location to the Burchia/Metabowerke container to provide additional protection for the latch mechanism against inadvertent disassembly and to provide additional force opposing lateral movement of the containers. This was presented as a known design choice for improving durability.
  • Expectation of Success: Success was expected because incorporating a recess is simple mechanical technology. Furthermore, Petitioner argued Burchia itself contemplated a "setback surface" embodiment, which was analogous to Lafragette's recess, making the combination predictable.

Ground 6: Claims 1-23 are obvious over Metabowerke in view of Burchia and Lafragette.

• Prior Art Relied Upon: Metabowerke (German Patent No. 20 2014 103 695 U1), Burchia (Patent 10,750,833), and Lafragette (Application # 2003/0139080).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground reversed the primary reference, arguing Metabowerke disclosed most claim limitations but did not expressly teach a spring-biased locking latch. Petitioner contended that Burchia and Lafragette both explicitly disclosed spring-biased locking latches. The argument was that it would have been obvious to replace Metabowerke's manual locking latch with the spring-biased versions from Burchia or Lafragette.
  • Motivation to Combine: A POSITA would modify Metabowerke to include a spring-biased latch from Burchia or Lafragette to facilitate quicker and more convenient locking. A spring-biased latch would allow for a "snap-in" engagement when stacking containers, eliminating the need for a user to manually actuate the latch.
  • Expectation of Success: The combination was a matter of substituting one conventional latching mechanism for another to gain a known advantage (convenience). Since all references were in the field of attachable containers using similar coupling principles, a POSITA would have a high expectation of success.
• Additional Grounds: Petitioner asserted additional obviousness challenges by adding further references to the primary combinations of Burchia and Metabowerke. These included combinations with Chen (Application # 2014/0265440) for teaching corner bumpers, Lin (Patent 9,375,835) for teaching half-width containers, and Bensman (Application # 2013/0127129) for teaching rear wheels and a telescoping handle.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the petition presented new prior art and arguments not previously considered by the USPTO.
• Key arguments based on the Becton, Dickinson factors included:
  • The primary references (Burchia, Metabowerke) were only cited in a large IDS during prosecution with a disclaimer of materiality and were never substantively reviewed by the examiner. Other key references (Lafragette, Chen, Lin) were never before the examiner at all.
  • The examiner’s allowance was based on overcoming a double-patenting rejection via a terminal disclaimer, not a substantive examination of prior art showing the claimed coupling mechanism.
  • The petition's arguments and combinations were never presented to or considered by the Office, which Petitioner argued constituted a material error of omission by the examiner.
• Petitioner also argued that Fintiv denial was not warranted, citing USPTO guidance that the Board will not deny institution based on a parallel ITC proceeding.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-23 of Patent 11,794,952 as unpatentable.