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 to be installed on a main fluid pipe. The valve is configured to receive remote wireless commands to selectively open or close the pipe, for instance, to prevent water damage from leaks.

3. Grounds for Unpatentability

Ground 1: Obviousness over the Triple+ NWL Valve - Claim 1 is obvious over the Triple+ NWL Valve.

• Prior Art Relied Upon: Petitioner’s own prior art product, the Triple+ nleak NWL automatic, wireless electric valve (“Triple+ NWL valve”), which Petitioner argued was in public use, on sale, and otherwise available to the public more than one year before the ’031 patent’s effective filing date, making it prior art under 35 U.S.C. §102(a)(1). Evidence cited included YouTube videos from March 2014, offers for sale in August 2014, and a sale of 4,000 units in September 2014.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the Triple+ NWL valve discloses every element of claim 1 except for the specific type of quarter-turn rotary valve used. The claim recites a “butterfly” valve, whereas the Triple+ NWL valve incorporated a “ball valve.” Petitioner provided a detailed, element-by-element comparison, including side-by-side images from the ’031 patent and the Triple+ NWL valve’s assembly guides, to argue that the physical structures (casing, motor, gear assembly, electronic controls, etc.) were otherwise identical.
  • Motivation to Combine (for §103 grounds): The argument centered on the motivation to substitute one known component for another. Petitioner argued that a person of ordinary skill in the art (POSITA) would have found it obvious to substitute the ball valve in the Triple+ NWL valve with a butterfly valve. Both are well-known types of quarter-turn rotary valves that perform the identical function of shutting off fluid flow. The choice between them was presented as a simple design choice, predictable in its result, based on factors like cost or pipe diameter. Petitioner cited Patent 6,945,274, which taught that a shut-off valve for a water line could be a gate valve, ball valve, or butterfly valve, as evidence of their known interchangeability.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because substituting one type of standard quarter-turn valve for another involves applying a known solution (a butterfly valve) to a known problem (shutting off water flow) to achieve a predictable result. The operational principles of both valve types were well-understood.
  • Key Aspects: A central contention was that the figures in the ’031 patent appeared to be black-and-white line drawings copied directly from Petitioner's own 2013 CAD drawings for the Triple+ NWL valve product. This was used to reinforce the argument that the claimed invention was not a new creation but merely a minor and obvious modification of the pre-existing, publicly-disclosed Triple+ NWL valve.

4. Key Technical Contentions (Beyond Claim Construction)

• Interchangeability of Quarter-Turn Valves: The petition’s core technical assertion was that ball valves and butterfly valves are functionally equivalent and interchangeable members of the same family of quarter-turn rotary valves. Petitioner argued that both operate identically by rotating a member 90 degrees to permit or block flow and were commonly used as shut-off valves in water lines. This asserted interchangeability was the foundation for the argument that substituting one for the other was an obvious design choice for a POSITA.

5. Relief Requested

• Petitioner requested institution of post-grant review (PGR) and cancellation of claim 1 of the ’031 patent as unpatentable.