Simpson Strong Tie Co Inc v. Columbia Insurance Co

1. Case Identification

• Case #: PGR2024-00050
• Patent #: 11,920,339
• Filed: August 30, 2024
• Petitioner(s): Simpson Strong-Tie Company Inc.
• Patent Owner(s): Columbia Insurance Company
• Challenged Claims: 1-31

2. Patent Overview

• Title: Method for Constructing a Fire-Resistive Wall Assembly
• Brief Description: The ’339 patent discloses methods for constructing a fire-resistive wall assembly. The methods involve mounting a fire wall hanger to a frame wall, cutting an opening in a fire-retardant sheathing panel, and installing the sheathing such that an extension portion of the hanger passes through the opening.

3. Grounds for Unpatentability

Ground 1: Claims 1-31 Lack Written Description Support and are Indefinite

• Legal Basis: 35 U.S.C. §112(a) and §112(b)
• Core Argument: Petitioner argued the claims fail the written description requirement of §112(a) because the original provisional application only described installing sheathing before mounting the hanger, the opposite of the claimed method sequence. The non-provisional application allegedly added new matter by introducing the claimed "hanger-first" installation method. Separately, Petitioner argued claims 1-31 are indefinite under §112(b) because key terms are ambiguous. For example, the term "fire wall hanger" is never defined in the specification, leaving a POSITA unable to determine its scope relative to other hangers. Likewise, terms of degree like "bounding" an opening from an edge and ensuring "close conformance" lack an objective standard in the specification, rendering the claim boundaries unclear.

Ground 2: Obviousness over Cullen, Bundy, and Allan

• Legal Basis: Claims 1-11, 13-22, 24-25, and 27-31 are obvious over Cullen in view of Bundy and Allan.
• Prior Art Relied Upon: Cullen (GB Patent App. Pub. No. 2,451,853A), Bundy (Patent 9,394,680), and Allan (Patent 4,827,684).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Cullen disclosed a joist hanger with the core structural features of the claimed hanger: a channel-shaped portion to receive a joist, a connection portion for wall attachment, and an extension portion spacing the two. Bundy taught modifying a similar hanger to create a gap between its channel-shaped portion and the wall frame specifically to accommodate layers of fire-retardant drywall. Allan taught the conventional practice of cutting slots in drywall so that a structural connector’s leg could pass through. The combination allegedly taught every step of the claimed method.
  • Motivation to Combine: A POSITA would combine Cullen's general-purpose hanger with Bundy’s teachings to adapt it for the known and desirable application of a fire-resistive wall assembly. To implement this design, a POSITA would necessarily and obviously turn to the well-known technique taught by Allan—cutting openings in the drywall to fit around the hanger's extension portion—to complete the installation.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying known, predictable solutions (Bundy's fire-rated spacing, Allan's drywall cutting) to a standard component (Cullen's hanger) to achieve the expected result of a functional, fire-rated structural connection.

Ground 3: Obviousness over ArchRecord, Commins, and Cullen

• Legal Basis: Claims 1-7, 9-11, 13-22, 24-25, and 27-31 are obvious over ArchRecord and Commins in view of Cullen.

• Prior Art Relied Upon: ArchRecord (an architectural magazine article, Nov. 2012), Commins (Patent 4,714,372), and Cullen (GB Patent App. Pub. No. 2,451,853A).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that ArchRecord and Commins established the state of the art, teaching that it was common practice to install gypsum sheathing for fire safety over a frame wall's top plate and to notch the sheathing to accommodate structural connectors that needed to pass through it. Cullen simply provided an exemplary structural hanger with the specific channel-shaped, connection, and extension portions recited in the claims. The claimed method was merely the use of a conventional hanger (Cullen) within the established construction framework taught by ArchRecord and Commins.
  • Motivation to Combine: A POSITA, tasked with creating a fire-rated wall assembly according to the methods shown in ArchRecord and Commins, would be motivated to select a suitable, commercially available hanger like Cullen to connect the structural components. The combination was presented as a simple substitution of one known element into a well-established method.
  • Expectation of Success: Success would be predictable, as the result was simply the sum of its known parts: a standard hanger performing its intended function within a standard fire-rated construction method.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations using Yamaguchi (Japanese Design Patent No. D1213894) and Robinson (GB Patent App. Pub. No. 2,433,522) as the primary hanger reference, combined with Bundy and Allan. Further grounds added Rice (Patent 4,696,113) for its teaching of using a template to cut openings in drywall.

4. Key Claim Construction Positions

• Petitioner argued that the term "planar extension plate" (recited in claims 20-23, 25-26) must be construed differently from "extension flange" (recited in claims 15-16, 19) under the doctrine of claim differentiation. Proposing that a POSITA would understand a "plate" to be a smooth, flat piece of material, Petitioner contended the term should be construed as "a flat portion of the extension flange between any bent portions." This construction was central to its argument that the claims lacked written description support, as the specification's figures allegedly show bends within the opening, meaning the "planar extension plates" themselves do not "extend through" the opening.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not discretionarily deny institution. Under the Advanced Bionics framework, Petitioner asserted that the Office never considered the ArchRecord-Commins-Cullen combination, nor did it substantively consider the teachings of Allan in combination with the other references during prosecution. Further, Petitioner argued that Fintiv factors strongly favor institution because the parallel district court litigation is in its early stages, with no claim construction order issued, discovery not ending until June 2025, and a median time to trial of over four years.

6. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 1-31 of Patent 11,920,339 as unpatentable.