PTAB

PGR2019-00025

Ely Holdings Ltd v. O Keeffe's Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mechanism for Supporting and Positioning a Glass Floor Unit
  • Brief Description: The ’709 patent discloses a floor structure comprising multi-component glass floor units. Each unit includes a durable upper glass portion separated by a cavity from a lower, fire-rated glass portion. The core of the invention is an adjustable mechanical assembly designed to support and precisely position these glass units relative to a foundational base.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are anticipated under 35 U.S.C. §102(a)(1) by an offer for sale

  • Prior Art Relied Upon: Documentary evidence of a commercial offer for sale of the GPX FireFloor System to the Webcor/Obayashi Joint Venture on or before March 10, 2015.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Safti First Corporation's GPX FireFloor System, which was offered for sale more than one year before the patent's effective filing date of July 1, 2016, embodied each limitation of the challenged claims. The petition provided technical drawings and product specifications comparing the GPX system's components—including its glass floor unit, fire-resistive frame (base), and threaded adjustment mechanism—directly to the elements recited in independent claim 1 and its dependent claims.
    • Key Aspects: This ground asserted that the commercial offer satisfied both prongs of the Pfaff test: it was a commercial offer for sale, and the invention was ready for patenting at the time, as evidenced by detailed proposals and product literature sufficient to enable a POSITA to practice the invention.

Ground 2: Claims 1-12 are obvious over Rae in view of DE759

  • Prior Art Relied Upon: Rae (Patent 7,694,475) and DE759 (German Gebrauchmusterschrift DE 202 02 759 U1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Rae disclosed the foundational elements of the claimed invention, including a fire-rated glass flooring system with a structural upper glass layer and a fire-rated lower glass layer supported by a structural frame. However, Rae's adjustment mechanism relied on elongated slots. DE759 was argued to cure this deficiency by teaching a multi-layer flooring system with a height-adjustable screw mechanism (adjuster) seated in an internally threaded support tube (receiver) for leveling floor panels.
    • Motivation to Combine: A POSITA would combine these references to improve the rudimentary adjustment capability of Rae's system. Incorporating the precise, height-adjustable screw mechanism from DE759 into Rae’s glass flooring system was presented as a predictable solution to achieve finer control over floor leveling, a common objective in construction.
    • Expectation of Success: The combination involved applying a known mechanical adjustment technique (DE759) to a known structural system (Rae), which Petitioner contended would have yielded predictable results without undue experimentation.

Ground 3: Claims 1-12 are obvious over DE230 in view of Rae

  • Prior Art Relied Upon: DE230 (German Gebrauchmusterschrift DE 202 06 230 U1) and Rae (Patent 7,694,475).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented the inverse combination of Ground 2. Petitioner argued that DE230 disclosed the core mechanical system: a multi-layer flooring system with an upper walking layer, a lower fire-protection layer, and a height-adjustable screw mechanism for support and leveling. DE230, however, did not specify that the floor panels were made of glass. Rae was asserted to supply this missing element by teaching the use of a structural glass layer over a fire-rated glass layer in a flooring system.
    • Motivation to Combine: A POSITA would combine these references to incorporate the well-known benefits of glass flooring (e.g., enhanced lighting, aesthetic appeal) into the adjustable flooring system of DE230. Using glass as the panel material in DE230's system was argued to be an obvious design choice for a skilled artisan seeking to create a modern, adjustable glass floor.
    • Expectation of Success: Petitioner contended that substituting the generic floor panels of DE230 with the specific glass panels taught by Rae was a straightforward implementation of known materials for their known purposes, carrying a high expectation of success.

4. Key Claim Construction Positions

  • "connector": Petitioner argued this term is rendered indefinite by the patent's specification. The Summary of the Invention allegedly described the connector as a single component ("a threaded nut"), while the Detailed Description, added by amendment, described it as a multi-part assembly ("nut 70 and bolt 66 serves as a connector"). Petitioner asserted that because a component cannot be both a single nut and a nut-and-bolt assembly simultaneously, the term lacks the reasonable certainty required by 35 U.S.C. §112. For its prior art analysis, Petitioner applied both interpretations to the references.

5. Key Technical Contentions (Beyond Claim Construction)

  • Indefiniteness of Dependent Claims: Petitioner argued that several dependent claims were indefinite under §112.
    • Claim 7: Alleged to lack proper antecedent basis for the phrase "said one threaded portion of said receiver," as independent claim 1 did not recite a receiver having any threaded portion.
    • Claim 8: Contended to be indefinite due to an irreconcilable conflict. The claim required the support sheet to be "rotatable relative to said adjuster," while the Patent Owner's arguments during prosecution allegedly established that the support must move "simultaneously with the adjuster," which would preclude relative rotation.

6. Relief Requested

  • Petitioner requested the institution of a Post Grant Review and the cancellation of claims 1-12 of the ’709 patent as unpatentable.