PTAB

IPR2025-00892

Milwaukee Electric Tool Corp v. Klein Tools Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Luminescent Fish Tape System
  • Brief Description: The ’209 patent relates to a luminescent fish tape system for pulling electrical wires and cables through conduits or enclosed wall spaces. The system includes a fish tape comprising a luminescent material and a case with at least a transparent portion to allow the luminescent material to be energized by exposure to a light source.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6, and 8-18 are obvious over Hartranft in view of Bruin.

  • Prior Art Relied Upon: Hartranft (European Patent No. 1,391,412) and Bruin (International Publication No. WO 1997/41626).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hartranft taught a conventional fish tape system comprising a coiled fish tape within a donut-shaped housing that is at least partially translucent or transparent. Hartranft also disclosed a handle mounted to slide around the circumference of the case to deploy and reload the tape. Petitioner asserted that Bruin taught a flexible element, such as a tape, for retrieving cables from within walls, where the tape was manufactured with or marked with a fluorescent material (a type of luminescent material) to allow an operator to easily locate it in a dark cavity. The combination of Hartranft's transparent housing with Bruin's luminescent tape allegedly met the limitations of the independent claims.
    • Motivation to Combine: The petition asserted that a person of ordinary skill in the art (POSITA) would combine Bruin's luminescent tape with Hartranft's fish tape system for two primary reasons. First, it would be a simple substitution of one known element (Hartranft's tape) with another (Bruin's luminescent tape) to improve a similar device in a predictable way—enhancing visibility in dark conduits. Second, a POSITA seeking to improve Hartranft's basic fish tape system would have naturally encountered Bruin's solution to the known problem of locating tapes in the dark.
    • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success because the combination merely involved applying a known material (luminescent coating) to a known device (fish tape) or substituting a known luminescent tape into a known housing, yielding the predictable result of a glow-in-the-dark fish tape system.

Ground 2: Claims 5 and 7 are obvious over Hartranft in view of Bruin and Noonan.

  • Prior Art Relied Upon: Hartranft (European Patent No. 1,391,412), Bruin (WO 1997/41626), and Noonan (Patent 5,505,432).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Hartranft and Bruin combination from Ground 1 to further address claims 5 and 7, which required a "threaded opening in at least one of the first and second ends" of the fish tape. Petitioner argued that Noonan taught this missing element by disclosing a fish tape wire with a mounting cylinder at its free end that included a longitudinal threaded bore for attaching anti-snagging devices or other accessories.
    • Motivation to Combine: Petitioner asserted that a POSITA would be motivated to incorporate Noonan’s threaded end into the Hartranft/Bruin system as a simple substitution of a known element. Hartranft’s eyelet and Noonan’s threaded bore were both known, interchangeable end-types for fish tapes. A POSITA would have seen this as one of a finite number of predictable solutions for attaching accessories to the fish tape, improving its versatility.

Ground 3: Claims 1-18 are obvious over the Klein Fish Tape Publication in view of the Southwire Glow-in-the-Dark Fish Sticks Publication.

  • Prior Art Relied Upon: Klein Fish Tape Publication ("KP1") and Southwire Glow-in-the-Dark Fish Sticks Publication ("SP1").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that KP1, a product instruction manual, disclosed a complete fish tape system with a donut-shaped case, a handle, and a steel fish tape. Critically, KP1's case included several "viewports"—or cutouts—on its sidewalls to allow a user to see the remaining tape inside. Petitioner asserted that SP1, a product brochure, disclosed luminescent ("glow-in-the-dark") fiberglass rods used for fishing wires through walls. Petitioner contended that combining SP1's luminescent feature with KP1's system rendered the claims obvious. The viewports in KP1's case met the "transparent" limitation by providing a "lack of material" through which light could pass to energize a luminescent tape inside.
    • Motivation to Combine: The petition argued that a POSITA would be motivated to add the luminescent property of SP1 to the KP1 fish tape to improve user safety and efficiency, particularly in dark conduits where KP1's tape would be hard to see. Since KP1 explicitly taught how to replace the tape in its reel, a POSITA would find it straightforward to substitute the standard tape with a luminescent one like that taught by SP1. This modification would use a known technique (luminescence) to improve a similar device (fish tape) to achieve a predictable benefit (enhanced visibility).
    • Expectation of Success: Petitioner claimed there was a high expectation of success because applying luminescent material to electrician's tools was a well-known practice. The combination would result in a working, improved system, as the viewports in KP1's case would inherently allow the luminescent material of SP1's tape to be energized by ambient light.

4. Relief Requested

  • Petitioner requests that the Board institute an inter partes review and find claims 1-18 of the ’209 patent unpatentable and canceled.