Triple Plus LTD v. Ben Old, Mordechai

1. Case Identification

• Case #: PGR2018-00038
• Patent #: 9,671,031
• Filed: March 1, 2018
• Petitioner(s): Triple Plus Ltd.
• Patent Owner(s): Mordechai Ben Old
• Challenged Claims: 1

2. Patent Overview

• Title: Automatic Wireless Electric Valve
• Brief Description: The ’031 patent is directed to an automatic, wireless electric valve designed for installation on a main fluid pipe. The valve is configured to selectively open and close in response to commands from remote control units or sensors.

3. Grounds for Unpatentability

Ground 1: Claim 1 is obvious over Petitioner’s Triple+ NWL Valve

• Prior Art Relied Upon: The primary reference was the Triple+ nleak NWL-IVSL-34-0 automatic wireless electric valve (“Triple+ NWL”), a prior art product developed and sold by Petitioner. Petitioner also cited Patent 6,945,274 to support the obviousness of substituting different types of quarter-turn valves.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that its Triple+ NWL product, which was in public use and on sale more than one year before the ’031 patent’s filing date, embodies every element and limitation of claim 1 except for the specific type of valve mechanism. The challenged claim recites a "butterfly" valve, whereas the prior art Triple+ NWL product used a "ball valve." Petitioner asserted that the products are otherwise identical in structure and function. To support this, the petition presented extensive side-by-side comparisons suggesting that the figures in the ’031 patent are merely line drawings copied directly from Petitioner’s 2013 CAD files for the Triple+ NWL product. Every component recited in claim 1—from the casing, electric motor, and internal power source to the gear mechanism and electronic controls—was mapped to a corresponding component in the Triple+ NWL.
  • Motivation to Combine: The sole difference between the claimed invention and the prior art product—the substitution of a ball valve with a butterfly valve—was argued to be an obvious design choice for a person of ordinary skill in the art (POSITA). Petitioner asserted that both ball valves and butterfly valves are well-known and interchangeable members of the "quarter-turn rotary valve" family. They perform the identical function of shutting off fluid flow via a 90-degree rotation. A POSITA would combine the known butterfly valve with the Triple+ NWL assembly to optimize for predictable design trade-offs, such as reducing manufacturing cost or weight, particularly for different pipe diameters, without requiring any inventive step.
  • Expectation of Success: A POSITA would have had a high and predictable expectation of success in making this substitution. The function and operation of both valve types were well-understood, and their interchangeability in shut-off applications was established in the art. Petitioner cited Patent 6,945,274 as an example, as it explicitly teaches that a shut-off valve for a water line can be a "gate valve, ball valve, globe valve, butterfly valve, or any type of valve that can be operated to stop water flow," demonstrating that substituting among these known options was a routine practice.
  • Key Aspects: A critical element of the petition was establishing the Triple+ NWL as prior art under the on-sale and public use bars of 35 U.S.C. §102(a)(1). Petitioner provided extensive evidence of invalidating activities that occurred more than one year before the ’031 patent’s November 1, 2015, filing date. This evidence included public demonstrations on YouTube in March and April 2014, offers for sale to insurance companies in August 2014, and a commercial sale of 4,000 units in September 2014. The petition’s central narrative was that the patent owner, who had previously worked with Petitioner on the Triple+ NWL, patented the prior art product after making only a single, trivial, and obvious modification.

4. Key Technical Contentions (Beyond Claim Construction)

• Interchangeability of Quarter-Turn Valves: The petition’s foundational technical argument was that ball valves and butterfly valves were functionally equivalent and readily substitutable for the claimed application. The petition argued that both valve types operate via a 90-degree rotation to permit or block flow and were commonly known and used as shut-off valves on main water lines. This interchangeability was presented not as a matter of hindsight but as a fundamental aspect of the state of the art at the time.
• Vagueness of "Butterfly" Disclosure in the Patent: Petitioner contended that the ’031 patent itself fails to disclose any unique or non-obvious characteristic of its "butterfly" valve that would distinguish it from a ball valve in a patentable way. The specification's description of the butterfly element—that it turns "perpendicular or parallel to the inner pipe" to block or permit flow—is a generic description applicable to any quarter-turn rotary valve, including the ball valve used in the Triple+ NWL. This vagueness was used to reinforce the argument that the choice of valve type was a simple design choice, not an inventive step.

5. Relief Requested

• Petitioner requested the institution of a Post-Grant Review and the cancellation of claim 1 of Patent 9,671,031 as unpatentable under 35 U.S.C. §103.